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The 'Sieckmann' Criteria

The following article considers the case of Ralf Sieckmann v Deutsches Patent- und Markenamt (“Sieckmann”), its seven criteria, and the difficulties of registering a smell in the UK.

Despite the successful registration of several olfactory marks in the late twentieth century, concerns were raised in John Lewis of Hungerford Ltd’s Trade Mark Application, where an application for the ‘essence of cinnamon’ applied to their furniture, made an erroneous assumption that such an essence is ‘universally recognised’.

Interestingly, the applicant in Sieckmann took a more sophisticated approach in their attempt to register a ‘methyl cinnamate’ olfactory mark; providing the chemical name, formula and even a sample. However, in what became a landmark decision by the ECJ, the registration was still rejected due to the difficulties of graphical representation.

Specifically, the chemical formula was considered to be non-representative of the odour and also lacked a sufficient level of intelligibility, clarity and precision. Similar problems of clarity and objectiveness also applied to the written description (‘balsamically fruity with a slight hint of cinnamon’) and, furthermore, the physical sample was deemed insufficiently durable and stable, and could not be considered a graphical representation.

These remarks became the seven specific criteria which now comprise the legal standard known as the Sieckmann Criteria (SC). These state that a sign must be clear (not ambiguous), precise (e.g. a colour cannot merely be described as ‘purple’), self-contained (e.g. music notes), easily accessible (e.g. the Pantone international database), intelligible, durable (the graphical representation must remain consistent), and objective. Indeed, when it comes to olfactory marks, Sieckmann was not against their registration per se, holding that ‘it is not necessary for a sign to be perceived visually, provided that it can be represented graphically’. However, AG Ruiz-Jarabo Colomer went on to say that the various scientific systems to record smells, lacked ‘the clarity and precision necessary for the visual representation of a distinctive mark’.

Although it is interesting to note that some EU countries, such as France, tried to get around the criteria by trying to register smells as a copyright (not an option in the UK due to the definition of a copyright), the remarks above cast doubt over the pre-Sieckmann olfactory marks that were registered, as it is unlikely that they would have passed the SC. Examples, such as ‘a floral smell of roses for tyres’ and a ‘smell of bitter beer applied to the flights of dart’, contain the kind of ambiguity that the SC rightly seeks to challenge.

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